Ex Parte Tran et alDownload PDFPatent Trial and Appeal BoardOct 31, 201311276586 (P.T.A.B. Oct. 31, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/276,586 03/06/2006 Vinh Tran 00008-0030-02000 3387 114629 7590 10/31/2013 BOOKOFF McAndrews, PLLC 2401 Pennsylvania Avenue, NW, Suite 450 Washington, DC 20036 EXAMINER CHEEMA, UMAR ART UNIT PAPER NUMBER 2444 MAIL DATE DELIVERY MODE 10/31/2013 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte VINH TRAN, BRIAN SULLIVAN, HARRY G. MORGAN, and RONALD HOWARD ____________________ Appeal 2011-006413 Application 11/276,5861 Technology Center 2400 ____________________ Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON APPEAL 1 Application filed March 6, 2006, which is a continuation of and claims benefit of U.S. Application No. 09/750,027, filed Dec. 29, 2000, which in turn claims benefit of U.S. Provisional Application No. 60/234,996, filed September 25, 2000. The real party in interest is AOL, LLC. Appeal 2011-006413 Application 11/276,586 2 STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1-5, 9-14, and 21-29. Claims 6-8 and 15-20 have been canceled (App. Br. 1.)2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appellants’ Invention The invention at issue on appeal concerns systems, machine-readable media, and methods for providing (making available) electronic information to a requestor based on previous request for related “non-electronic” information. (Spec. 1:9-10; 1:21-2:24; 3:24-4:17; Abstract.) Representative Claim Independent claim 1, reproduced below, with disputed limitations italicized, further illustrates the invention: 1. A method for making electronic information more readily available to one or more access requestors, the method comprising: identifying for transport electronic information stored at a data source; transporting the identified electronic information from the data source to a requesting access requestor; anticipating, using a processor, a demand of the access requestors for access to the electronic information based at least on past requests for access to related non-electronic 2 We refer to Appellants’ Specification (“Spec.”); Appeal Brief (“App. Br.”) filed September 30, 2010; and Reply Brief (“Reply Br.”) filed February 16, 2011. We also refer to the Examiner’s Answer (“Ans.”) mailed December 17, 2010. Appeal 2011-006413 Application 11/276,586 3 information that is related to the electronic information, that is not particular to any single access requestor, and that is different from the electronic information; determining, based on the anticipated demand, to store the already identified and transported electronic information on a storage medium that is more accessible to the access requestors than the data source; and storing the transported electronic information on the storage medium. Rejection on Appeal The Examiner rejects claims 1-5, 9-14, and 21-29 under 35 U.S.C. § 103(a) as being unpatentable over U.S. Patent. No. 6,324,182 B1, issued Nov. 27, 2001 (filed Mar. 11, 1999) (“Burns”), U.S. Patent. No. 6,622,168 B1, issued Sep.16, 2003 (filed Nov. 24, 2000 claiming benefit of U.S. Provisional Application No. 60/195,806, filed on Apr. 10, 2000) (“Datta”), and U.S. Patent. No. 6,578,068 B1, issued Jun. 10, 2003 (filed Aug. 31, 1999) (“Bowman-Amuah”). ISSUE Based on our review of the administrative record, Appellants’ contentions, and the Examiner’s findings and conclusions, the pivotal issue before us follows: Does the Examiner err in concluding that the combination of Burns, Datta, and Bowman-Amuah collectively teach or would have suggested “anticipating, using a processor, a demand of the access requestors for access to the electronic information based at least on past requests for access to related non-electronic information that is related to the electronic information, that is not particular to any single access requestor, and that is Appeal 2011-006413 Application 11/276,586 4 different from the electronic information” within the meaning of claim 1 and the commensurate limitations of claims 28 and 29? FINDINGS OF FACT We adopt the Examiner’s findings in the Answer and the Final Office Action mailed January 25, 2010 as our own, except as to those findings that we expressly overturn or set aside in the Analysis that follows. ANALYSIS Based on Appellants’ arguments (App. Br. 3-5), we select independent claim 1 as representative of Appellants’ arguments and groupings with respect to claims 1-5, 9-14, and 21-29. 37 C.F.R. § 41.37(c)(1)(vii)(2004). Appellants contend that Burns, Datta, and Bowman-Amuah do not teach or suggest the disputed features recited in claim 1. (App. Br. 3-5; Reply Br. 1-7.) Specifically, Appellants contend that “[a]lthough the Bums system schedules delivery of web pages based on patterns of requests to the web pages, the Burns system does not schedule delivery of web pages based on past requests for access to non-electronic information.” (App. Br. 3.) Appellants also contend that “[a]lthough Datta describes a preloader that manages a cache of web page components, the Datta preloader does not manage the cache of web page components based on past requests for access to non-electronic information” (App. Br. 4.) Appellants further contend that Bowman-Amuah also does not describe anticipating access based on past requests for access to non-electronic information, but instead describes: a system [ ] for distributing incoming requests from a user Appeal 2011-006413 Application 11/276,586 5 interface amongst a client and server components for optimizing usage of resources, where incoming requests are first received and stored by an activity module, then the activity module instructs a client to handle a first subset of the requests and passes a second subset of the requests on to a “utilization- based load balancer.” (App. Br. 4.) The Examiner sets forth a detailed explanation of the obviousness rejection in the Examiner’s Answer with respect to each of the claims (Ans. 3-14), and in particular claim 1 (Ans. 3-6, 12-14). Specifically, the Examiner provides an interpretation of “non-electronic information” (Ans. 13) and provides a detailed explanation with respect to Burns’ disclosure of scheduling frequently requested content based on, inter alia, the time of day and Bowman-Amuah’s disclosure of delivering request based on utilization and routing requests through an activity module. (Ans. 3-6, 12-14 (citing Burns, col. 8, ll. 41-59; col. 9, ll. 12-34; Figs. 2, 3, 6 and Bowman-Amuah, col. 2, ll. 18-33; Abstract).) From these findings, the Examiner concludes that Burns, Datta, and Bowman-Amuah render Appellants’ claim 1 obvious. (Ans. 3-6, 12-14.) We adopt these findings and this reasoning as our own. Upon consideration of the evidence on this record and each of Appellants’ contentions, we find that the preponderance of evidence on this record supports the Examiner’s findings and ultimate conclusion that Burns, Datta, and Bowman-Amuah teach or would have at least suggested the disputed features of claim 1. Accordingly, we sustain the Examiner’s rejection of claim 1 for the reasons set forth in the Answer, which we incorporate herein by reference. (Ans. 3-6, 12-14.) Our additional analysis will be limited to the following points of emphasis. Appeal 2011-006413 Application 11/276,586 6 We initially note that the argued limitations fail to distinguish the claimed invention from the prior art either structurally or functionally. Specifically, the recited features argued by Appellants – “anticipating . . . a demand of the access requestors for access to the electronic information based at least on past requests for access to related non-electronic information that is related to the electronic information, that is not particular to any single access requestor, and that is different from the electronic information” (claim 1, emphasis added) – essentially consist of non- functional descriptive material – i.e., data. Appellants merely attempt to distinguish the claim by the content of the “non-electronic information” – i.e., the data utilized by the unclaimed process/algorithm to “anticipate” (predict) demand. However, the content of the “non-electronic information” does not change the functionality of the claimed process (method). The recited functionality of the claim limitation – “anticipating” demand remains the same regardless of what the data constitutes, how the data may be named, or the relationship among the data and do not further limit the claimed invention either functionally or structurally. The informational content of the data thus represents non-functional descriptive material, which “does not lend patentability to an otherwise unpatentable computer-implemented product or process.” Ex parte Nehls, 88 USPQ2d 1883, 1889 (BPAI 2008) (precedential). See Ex parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005) (informative) (Fed. Cir. Appeal No. 2006-1003), aff’d, (Rule 36) (June 12, 2006) (“wellness-related” data in databases and communicated on distributed network did not functionally change either the data storage system or the communication system used in the claimed method). See also In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. Appeal 2011-006413 Application 11/276,586 7 2004); Nehls, 88 USPQ2d at 1887-90 (discussing non-functional descriptive material). Even if we arguendo ascribe some patentable weight to the limitation, as explained by the Examiner (Ans. 13), “the claimed ‘non-electronic information’ is broadly recited, and is not limited by the claim language or explained in Appellants’ specification regarding any specific mechanics. At best, the claimed ‘non-electronic information’ . . . is interpreted as any ‘electronic information’ other than Appellant’s claimed ‘electronic information.’” Appellants do not explicitly define “non-electronic information” either in their Specification or the claim. After a thorough review of Appellants’ Specification, we agree with the Examiner’s interpretation of “non-electronic information” as being data that is related to but different from the “electronic information” which is the object of the anticipated demand. This broad but reasonable construction is consistent with Appellants’ Specification (Spec. 3:24-4:17), which describes such information as being feedback from requestors, survey research, topics of interest, hobbies, etc. We further note that any data/information utilized by a processor must be electronic information in its final processed form. Even if we narrowly interpret, which we do not, the disputed “non- electronic information” as originating in non-electronic form (non-electronic data), such as user input or feedback, both Burns and Bowman-Amuah describe such data. Burns determines usage patterns (anticipates demand) based on the time of day and operator input (Burns, col. 8, ll. 53-59; col. 9, ll. 12-34). Bowman-Amuah describes servicing information requests utilizing non-electronic criteria – routing through an activity module to a Appeal 2011-006413 Application 11/276,586 8 load balancer based on server utilization. (Bowman-Amuah, col. 2, ll. 18- 24). Thus, Appellants do not persuade us of error in the Examiner’s obviousness rejection of representative independent claim 1, independent claims 28 and 29, and dependent claims 2-5, 9-14, and 21-27 (dependent on claim 1), not separately argued with particularity. (App. Br. 3-5.) Accordingly, we affirm the Examiner’s obviousness rejections of claims 1-5, 9-14, and 21-29. CONCLUSION OF LAW Appellants have not shown that the Examiner erred in rejecting claims 1-5, 9-14, and 21-29 under 35 U.S.C. § 103(a). DECISION We affirm the Examiner’s rejections of claims 1-5, 9-14, and 21-29. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Vsh Copy with citationCopy as parenthetical citation